Monday, June 27, 2005

First, here's a link to the main opinion: http://wid.ap.org/scotus/pdf/04-480P.ZO.pdf. and here is Ginsburg's concurring and Breyer's concurring. I don't know about others, but I view the Court as having punted: they decided mainly an issue that wasn't in front of them (inducement) and didn't decide the one that was, the effect of Sony in the Internet era. I think this happened because neither the Ginsburg camp nor the Breyer camp could get two others to join. There were three for the picking, Souter, Scalia and Thomas. The two concurring camps have diametrically opposed views of the case, totalling six Justices. What does this do to the influence that the "unanimous" Souter opinion has? I think it greatly undermines it, resulting, as predicted in a muddied, murky future.

The Souter opinion does have a helpful slap down of the Ninth Circuit's bizarre "specific knowledge" requirement, and I think it is a good policy issue about the relationship of strong inducement evidence coupled with a staple article of commerce defense. But, I ask would the Betamax itself have met with Souter's approval? Recall Sony advertised that people could use it to copy their favorite movies, and we're talking here about librarying, not just time-shifting.

I need as most do, more time to sort through this, but my first read through is negative. We have two very different visions, Ginsburg's camp, which focuses more on what the hard evidence is now, and Breyer's, which focuses on the promise of technology, with three votes uncommitted to either camp. Regardless of whose side you favor, that kind of split is not helpful.

Friday, June 24, 2005

We want our laws to be clear so that we can know what is commanded of us. In the case of copyright, we want to know who owns what, for how long, how far the copyright owner's rights reach, which unauthorized uses are excused and which aren't. Given the hefty civil and criminal penalties for infringement, clarity is not only desirable but seems necessary to comport with Due Process. At the same time, we want our laws to be fair, and fairness frequently means being flexible. Flexibility is, though, an enemy of clarity since we do not know in advance if a court will hold that the literal language of the law will bend to the particular facts at hand.

Yesterday's discussion of striking similarity raised this tension between clarity and fairness from a somewhat different angle, but I think the general contours are equivalent. Let's say the "law" (in this case judge-made), working at an acceptable degree of clarity says that if a plaintiff can't prove access plus copying, plaintiff loses even if the two works are substantially similar. That approach provides certainty in application: if not before suit is filed (hopefully), at least after discovery, one will likely know whether a case can go to the trier of fact. Litigation risks can be assessed and perhaps a reasonable settlement effectuated.

But to some, the existence of striking similarity calls, by itself, for a different approach. That approach would suspend the usual rules in favor of incredulity over defendant's denial of copying given the striking similarities. This incredulity may be the result of what Smoky called yesterday the lie factor, or what Judge Posner would call common sense: common sense tells us, at least inferentially, that such striking similarities must be the result of copying even though there is no evidence of it and notwithstanding plaintiff's burden of persuasion on that issue.

If infringement cases where striking similarity is alleged are permitted to go to a jury (based, lest we forget, solely on the existence of expert testimony) we are in treacherous territory as the BeeGees case (Selle v. Gibb) demonstrated. In Selle, I believe it was Barry BeeGee who mistook his own composition for plaintiff's in a deposition, evidence certainly of similarity, but not of copying. And in Gaste v. Kaiserman, there is no doubt in my ear that the introduction to the two songs were strikingly similar. But it is also clear to me that Gaste never should have gone to a jury due to a lack of copying and that that verdict to the contrary was, therefore, a travesty of justice.

In Selle, the district judge did the right thing by granting a jnov; that did not happen in Gaste. It may be some will think both decisions are "correct" or that such disagreements as to the result are inevitable. But it is also clear that absent the availability of striking similarity neither case would have gone to the jury. Those whose favor clarity (and respectfully, I think that group is larger than insurance companies) think that is a good idea. Those who want to maintain flexibility (or as Judge Posner would say, common sense) favor maintaining it. Both approaches have their costs.

Starting Monday I will be on vacation through July 4th, returning to the blog on Tuesday, July 5th. When Grokster comes out, hopefully Monday June 27, I will be guest blogging (with others) on Tom Goldstein's Scotusblog site. Happy 4th and thanks for reading.

Thursday, June 23, 2005

In commenting on yesterday's posting on the independent creation defense, John Noble referred to evidentiary issues that are raised in infringement actions. In particular, he wondered "what evidence is enough to 1) establish a genuine issue of material fact, [for summary judgment disposition] and then 2) prove copying by a preponderance of the evidence."

Professor Douglas Lichtman at the University of Chicago Law School has a very interesting article (existing in various forms) called "Copyright as a Rule of Evidence," available at this link. It is unusual for law professors to focus on such practice oriented issues, much less to use them as Lichtman does to attempt to explain doctrine. My former colleague at Cardozo, Peter Tillers (a blogger for JURIST), is exceptional for his rigorous approach to evidence, much of which is fascinating but which is also highly theoretical. (See his "Dynamic Evidence Home Page"). His work on inference and inductive reasoning is very insightful and he is also a founder and editor of the amazing peer-reviewed Law, Probability & Risk, an Oxford University online journal. Anyone wanting to seriously think through evidence would benefit from reading the journal and Peters' many fine works (he also edited some volumes of Wigmore), but it is not easy going.

Professor Lichtman's article covers originality, and after reviewing traditional rationales for the creativity requirement (like "the public has a strong interest in making full use of factual information" in the case of compilations, or other works of "low social value") he also asks whether there is an evidentiary rationale: uncreative works pose extraordinary problems of proof since a court faced with two remarkably similar but similarly uncreative works "would find it virtually impossible to determine whether one copied from the other... ."

He next tackles fixation, merger, and registration, but doesn't really tackle striking similarity. I hope he does in a future work because striking similarity is all about evidence. It is my view that the use of striking similarity is always a mistake and that the doctrine drives a stake through the heart of basic principles of copyright law in a misguided effort to compensate for plaintiff's failure to meet its primafacie burden of proving access and copying. The origins of striking similarity go back to Judge Frank's disastrous (but nevertheless oft-cited) opinion in Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)(Judge Clark's dissent accused Frank of having a "book-burning mentality"). As readers of this blog will quickly grasp, the case really has to do with the requisite evidence to survive summary judgment, a problem that still haunts the Second Circuit.

In brief, we can say that the infringement elements of plaintiff's primafacie case are access plus copying plus material similarities in protectible expression. Access is a component of copying because you can't copy if you don't have access. But access isn't copying and the copying must still be material. Access is broadly defined to include not only literal access but also a reasonable opportunity to see or hear the work (the latest bubble-gum pop song you can't escape if you try, for example). Where access is established and some similarities (even in non-protectible material) are shown between the parties' works, copying can be presumed, but this is of course rebuttable.

Arnstein held that even where access is absent, one can infer both copyingand the copying necessary to also prove material appropriation, if the similarities "are so striking as to preclude the possibility that plaintiff and defendant independently arrived at the same result." Striking similarity thus collapses the entire infringement analysis into itself. One can say, ah but it just permits an inference. Right, and tell that to a jury, as the BeeGees found out. (They were saved by a jnov).

Any inference must be based on an established fact (access) from which one may then infer copying from yet other evidence (e.g., common errors or some level of similarity)(The best discussion of this is Judge King's dissenting opinion in the first Bouchat v. Baltimore Ravens, Inc. opinion, 241 F.3d 350, 365 (4th Cir. 2000)). But with striking similarity there is no established fact from which an inference is made. To the contrary, plaintiff seeks to create an inference and to then use that free-floating inference to prove all elements of its primafacie case.

And how does one establish striking similarity? Through expert witnesses. For very little money one can always get an expert to say something like "the similarities are so striking they can only be explained by copying." In the Second Circuit you thereby automatically survive summary judgment. That's the lesson of Repp v. Webber, 132 F.3d 882 (2d Cir. 1997), aff'd after trial, 1999 U.S. App. LEXIS 27393 (2d Cir. Oct. 27, 1999), endorsed by Langman Fabrics v. GraffCaliforniawear, Inc., 160 F.3d 106, 115-116 (2d Cir. 1998). Surprisingly, it is the Ninth Circuit that has provided the adult supervision on the issue, rejecting reliance on experts in Onofrio v. Reznor, 2000 U.S. App. LEXIS 2835 (9th Cir. 2000).

There is no reason the basic rules of evidence should be suspended for copyright litigation.

Wednesday, June 22, 2005

Independent creation -- defendant's creation of its work without copying plaintiff's -- hearkens back at least to the English case of Roworth v. Wilkes, 1 Campbell 94, 98 (1807) and is a cornerstone of copyright law, exonerating the independent creator from all liability. Without the defense, those who didn't copy would be infringers nevertheless. In the area of popular music and creatively-challenged works, where similarities are more likely to arise from the nature of the subject matter, independent creation prevents copyrights from becoming patents.

Surprisingly, the 20th century began in the United States on the wrong foot with the Second Circuit's affirmance of an early Learned Hand district court opinion holding that independent creation was not a defense to an infringement claim. Hein v. Harris, 175 F. 875 (S.D.N.Y.), aff'd, 183 F.2d 107 (2d Cir. 1910)(This case along with discussion of the dispute and musical samples is featured on the Columbia University Law School Arthur W. Diamond Law Library Music Plagiarism Project's website. I thank Timothy Phillips for pointing the site out to me). Hand subsequently thought better of the question in Fred Fisher, Inc. v. Dillingham, 298 F. 145 (S.D.N.Y. 1924), and in Arnstein v. Edward B. Marks Music Corp., 82 F.2d 275 (2d Cir. 1936), court of appeals Judge Hand expressly disavowed Hein because it was "contrary to the very foundation of copyright law, and was plainly an inadvertence which we now take this occasion to correct." In that same year, in Sheldon v. MGM Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936), Hand had already foreshadowed Arnstein when he famously wrote "[I]f by some magic a man who had never known it were to compose anew Keats's 'Ode on a Grecian Urn,' he would be an 'author,' and if he copyrighted it, others might not copy that poem, though they might of course copy Keats's."

The principle being well-established now is not, unfortunately, a guarantee that it cannot be undermined. One way independent creation is threatened is procedural, the misdescription of it as an affirmative defense. It is not; it is instead a denial of copying. The difference is significant. Once plaintiff has made out a prima facie case, defendant may interpose an affirmative defense for which defendant bears the burden of production and persuasion. By contrast, where defendant denies an element of plaintiff's prima facie case, the burden of persuasion remains with plaintiff, although the burden of production may or may not shift as the case proceeds. Independent creation is a denial of a central element of plaintiff's prima facie case, copying. Plaintiff always bears the burden of persuasion on copying and initially bears the burden of production. The best discussion of these points (including copyright) is in a Third Circuit trade secrets case, Moore v. Kulicke & Soffa Industries, Inc., 318 F.3d 561, 573-574 (3d Cir. 2003).

The First, Fourth, Sixth, Seventh, Ninth, and Eleventh Circuits get this point right. Consistent with its historical problems with the doctrine, some panels of the Second haven't, Procter & Gamble Co. v. Colgate-Palmolive Co., 199 F.3d 74, 77 (2d Cir. 1999); Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997), 1999 U.S. App. LEXIS 27393 (2d Cir. Oct. 27, 1999). This last case also raises the second attack on independent creation, the striking similarity doctrine, which will be the subject of Thursday's posting. [If Grokster is handed down Thursday, that case will be featured as Friday's posting].

Tuesday, June 21, 2005

Countless people were glued to their monitors around 10 am EST yesterday to learn whether the Supreme Court had handed down the Grokster opinion. A pdf file was sure to surface quickly. With a decision day this Thursday and next Monday, the process will be repeated.

How times have changed. I remember vividly sitting in the Supreme Court chamber in 1983 on the last day of the term, waiting for the Betamax decision to be announced, only to be disappointed (along with many others in attendance) that it had been set over for reargument. Reporters and lawyers rushed off for pay phones (no cell phones or Blackberries in 1983) to convey the news.

Two years later, in 1985, when Harper & Row v. Nation Enterprises was decided, I went over to the Court and stood in line at the Public Information Office on decision days hoping it would come out. It did on my first try and the Court cited in the opinion a book on fair use I had just published. It was my first citation by any Court and it was a dizzying experience seeing the opinion in hard copy, holding the opinion in my hand, knowing I had it before anyone else (other than Linda Greenhouse and the press who got it 3 or 4 minutes earlier).

I have been to every oral argument in a copyright case (as well as some others) the Court has heard since 1983 with the exception of Lotus v. Borland, and until I moved to New York in 1995, I always later stood in the opinion line, out of a love of the experience of being in the Court. Once when standing there, I was startled by Justice O'Connor coming out of a door right in front of me, and once by Justice Blackmun breezing by. Since I worked on Capitol Hill, I sometimes had a picnic lunch on the Court grounds. One day I saw Justice Rehnquist leave with one person (not security) and come back a few minutes later with another person (also not security). I couldn't figure out why he changed friends so quickly, but he was very friendly, waiving to me both times, as was Jesse Helms when we once sat together on an internal subway in the Senate after he had just trashed a nominee to the Eleventh Circuit (Judge Barkett). At a lunch in the Supreme Court for Congressional staff I sat between Senators Strom Thurmond (whose hair was the color of Tang) and Howell Heflin (who looked less like a person and more like some vague force of nature).

I doubt one has as many such experiences now, post 9/11, and while those who stand in line at the Public Information Office still see opinions first -- given how slow the Court is in putting things on its website -- the rest of the world catches up very quickly. That's a good thing, but I still treasure my memories from a different era.

Monday, June 20, 2005

Friday's blog dealt with the ordinary observer test; today's with the more discerning observer test. The more discerning observer test is employed where there is present in both parties' (but especially plaintiff's) a considerable amount of public domain material. The ordinary observer test is inappropriate in such a circumstance because unless the public domain elements are disregarded in the ultimate substantial similarity determination, that analysis will be skewered; it will result in the trier of fact finding similarities resulting from material that plaintiff does not have an ownership interest in. And from a policy perspective, failure to exclude substantial amounts of public domain material will also result in fewer derivative works based on that material.

There is a countervailing risk, though, and that is dissection of a work, such a work of visual art, where its originality (even when based on public domain elements) is based on the interrelationship between the constituent elements. When those elements are factored out and then separately compared or left out entirely (as pd), there is a risk that the trier of fact will overlook the creativity in the whole. (This concern with the whole is what led to the earlier "total concept and feel" test). Yet, where the unprotectible elements have a significant impact on the overall total concept and feel of the parties' work, it is wrong to ignore that impact: a thin copyright can, thereby, become impermissibly fat based on pd elements.

The Second Circuit tackled these problems in Folio Impressions, Inc. v. Byer Calif., 937 F.2d 759 (2d Cir. 1991) and directed the trier of fact to only consider the protectible elements, after factoring out the unprotectible elements. In Knitwaves, Inc. v. Lollytogs, Ltd., 71 F.3d 996 (2d Cir. 1995), however, the court backtracked some, describing Folio Impressions as involving "rather specialized facts," and expressing a concern that if one dissected works of visual art too far one, would be forced to say "there can be no originality in a painting because all colors of paint have been used somewhere in the past." This statement was hyperbole and as such not really helpful.

The solution may be that while the more discerning observer test factors out unprotectible elements, a total concept and feel analysis is still employed, but using the protectible elements in the parties' works.

The principles are not really that difficult to articulate (I accept others may have different ways of articulating them), but they are very hard to apply in practice. The Second Circuit's Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003) opinion is a good example. (I played a very minor role on appeal for defendant). Plaintiff took substantial public domain elements from diverse sources and combined those elements in an unusual way, modified them, and added a few new elements. District Judge William Pauley found the work original although with a very thin copyright. (The court of appeals seems to have taken an even dimmer view on the scope of copyright issue than did Judge Pauley.) Defendant took the same public domain sources, modified them yet differently, and added new material too. Judge Pauley granted summary judgment of no infringement; the court of appeals reversed, granting summary judgment to plaintiff.

A correct analysis in that case entailed the following steps: (1) identification of the public domain elements in plaintiff's work; (2) identification of plaintiff's new elements; (3) identification of the public domain elements in defendant's work; (4) identification of those elements in defendant's work copied from plaintiff; (5) identification of the new elements added by defendant. In the end, the substantial similarity analysis, using the more discerning observer test, would have to exclude the pd material in both parties' works and would also have to exclude the new elements added by defendant. Infringement could only be found if the new elements added by plaintiff (including the original modifications of the pd material) constituted a material part of defendant's work.

In Tufenkian, I believe the total concept and feel of the parties' works (limited to only the protectible elements) was not materially similar. I further believe the court of appeals ignored (as Judge Pauley had not) the new elements added by defendant and that the circuit significantly downplayed the overwhelming impact of the pd elements. Both parties' works were exquisite high-end carpets, and both should have been left to compete in the marketplace, with plaintiff's thin copyright protecting him only against verbatim or non-verbatim copying, neither of which had occurred in that particular dispute.

Friday, June 17, 2005

A number of areas of law have, of necessity, hypothetical persons whose purpose is to provide a benchmark against which particular conduct is measured. In copyright infringement analysis, there is the ordinary observer (or listener). The ordinary observer is the benchmark against which the presence or absence of substantial similarity is determined. The origins of the ordinary observer test may lie in an 1822 English decision, West v. Francis, 5 B&A 743, quoted by White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1, 17 (1908): "A copy is that which comes so near to the original as to give every person seeing it the idea created by the original." "Every person" couldn't have meant literally every person, but presumably referred to a hypothetical person. By the way, unlike trademark infringement, in copyright infringement cases, survey evidence is not permitted.

"Whether (if he copied) defendant unlawfully appropriated presents, too, an issue of fact. The proper criterion on that issue is not an analytic or other comparison of the respective musical compositions as they appear on paper or in the judgment of trained musicians. The plaintiff's legally protected interest is not, as such, his reputation as a musician but his interest in the potential financial returns from his compositions which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ears of lay listeners, who comprise the audience for whom such popular music is composed, that defendant wrongfully appropriated something which belongs to the plaintiff."

In other words, the inquiry is whether defendant has captured some of plaintiff's market, as determined by those who comprise the market. This is not the same as the fourth fair use factor, but instead is a way of determining the relevant benchmark. But the market may not always be the lay public, as in Arnstein; it may be more specialized. In that case, the ordinary observer test gives way to a more specialized observer. This is seen in Dawson v. Hinshaw, 905 F.2d 731 (4th Cir. 1990), where plaintiff's gospel music arrangements were sold only in sheet music form to choral directors. Those choral directors were, therefore, the relevant market. In other cases, the market might be children, deemed to be a "less" discerning audience.

A very recent look at the ordinary listener test is Johnson v. Gordon, 2005 U.S. App. LEXIS 9902, 74 USPQ2d 1705 (1st Cir. May 31, 2005), a music infringement case. While in most respects Johnson is straightforward, one aspect is disturbing, its reliance on "experts" for the ultimate question of substantial similarity. That was error. Experts, if permitted at all in non-computer program infringement cases (and Learned Hand thought they should be banned altogether, as do some sitting appellate judges I know) should be limited to testifying about whether defendant copied or not. By letting experts opine about substantial similarity not only are those experts testifying about the ultimate fact question, they are subverting the entire basis for the ordinary observer test.

Thursday, June 16, 2005

On Tuesday, the Second Circuit set aside an award of $54 million in the long running dispute between TVT Records/Steve Gottlieb and Island Def Jam Music/Lyor Cohen over the right to produce and market sound recordings by the group Cash Money Click (which included Ja Rule), 2005 U.S. App. LEXIS 11147. Irv Gotti (Irving Lorenzo), originally a talent scout at TVT and then infamous from his role as a producer for Murder Inc., was also a key player. A jury had awarded $25 million in actual and $107 million in punitive damages on to TVT, but Judge Marrero remitted that amount to the $54 million. The Second Circuit has now reduced that amount to zero.

In an earlier decision that caused a stir, Judge Marrero held open the possibility of punitive damages under the Copyright Act. When plaintiffs later opted for statutory damages the issue was moot although it lives on as a bad dream for many. Bluntly put, punitive damages are never available in copyright cases. Bad behavior is remedied, if at all, under increased willful statutory damages.

The Second Circuit's vacation of the copyright infringement verdict and damages raises the economically and legally important relationship between breach of contract and copyright claims. The former are state law questions, the latter exclusively federal. The basis for the court of appeals' holding was its disagreement with Judge Marrero's legal conclusion that a fraudulently induced copyright license is invalid "ipso facto," and therefore any use which would constitute infringement in the absence of a license is infringement since the license doesn't exist. The Second Circuit, per Judge B.D. Parker, reversed, holding that "the license must be formally rescinded before an infringement action based on fraudulent infringement of a copyright license can proceed."

As a matter of contract law, a material breach will provide the grounds to terminate a license. An automatic recission provision is the best idea for copyright owners. With a material breach, the copyright owner can elect to sue for breach of contract or infringement, but absent a recission, the grant continues in place and only a contract action may be brought. The Second Circuit's TVT opinion makes clear this principle applies to claims of fraudulent inducement and the principle was worth $54 million. Those who wish to sue for copyright infringement where a contract existed but has been materially breached should make sure the contract has, in fact, been rescinded before an infringement claim is brought. Without recission (automatically or formally), any award for infringement will be void.

Tuesday, June 14, 2005

US adherence to the Berne Convention in 1989 has taken a beating on this blog and elsewhere. I disagree with that criticism and will explain why. In short, I think the impact of the Berne Convention on U.S. law is not well understood and that post-1989 changes are wrongly influencing our perceptions of the convention.

The most fundamental point is that Berne is a convention for foreigners. This means Berne does not require a country to do anything for its own authors. We could still have renewal and mandatory notice for works of U.S. origin if we wanted to. The two-tier situation in Section 411(a) which requires pre-infringement registration (or rejection) only for U.S. works illustrates this point. And Berne of course only goes as far as its terms even for foreigners, meaning concretely that we can impose formalities on remedies not required by Berne. And we do: Section 412 conditions awards of attorney's fees and statutory damages on pre-infringement registration, even though registration is a formality otherwise prohibited by Article 5(2).

Berne says nothing about many of the important issues in copyright: it doesn't influence how to determine originality, authorship, substantial similarity, or fair use for starters. It doesn't even cover sound recordings. It doesn't have anything to say about whether caching is the making of a copy (although the U.S. strove to include this in the WIPO Treaties); it doesn't say anything about compulsory license terms or rates or whether an over-the-air radio station that is simultaneously webcast is subject to compulsory licensing. It doesn't say anything about reverse engineering of software or interoperability. And the term of protection it requires is life of the author plus 50 years, not life plus 70.

Alot has happened since 1989, including the WIPO Copyright Treaty, which is a special agreement under Article 20 of Berne. That treaty does obligate the U.S. to have anti-circumvention measures and copyright management information provisions. These obligations became the basis for the DMCA provisions and their presence has led opponents to condemn Berne. I think that is unfair for two reasons. First, the treaty provisions do not spell out the details. But more importantly, the U.S. was in the vanguard in pushing for their inclusion in the treaty. The inclusion was then used as justification for the domestic legislation (we have to do it, the treaty requires us to). That is, of course, sophistry: the only reason there is a treaty obligation is because we wanted one.

The fault (if there be any, a partisan determination) lies not with Berne then, but with U.S. policy. We wanted to join Berne so that we could have a seat at the international table. We do have a seat and we have been using it. But we shouldn't delude ourselves into thinking that we are in an EU situation where Brussels is calling the shots for national governments. The shots being called are ones we want, so the blame or praise begins and ends at home.

Monday, June 13, 2005

The posting on Termination of Transfers prompted some commentary about the eternal struggle between authors and distributors (the latter broadly defined). That struggle may (but need not) be phrased as "Do distributors end up, unfairly, with the lion's share of the money from exploitation of the work?" The term "unfair" is the critical one, of course. No one expects distributors not to make money, and most of it to boot, and few distributors think authors shouldn't get some royalties. How much is too much for either side is the eternal in the eternal struggle.

One area that uniquely raises this issue is droitde suite, called in English speaking countries, resale royalties. (See explanation at this link: European Visual Artists Society). This concept, where legislated or contractually required, places a royalty on the resale of the physical object embodying a work of art. ("Resale" means after the original sale of the object by the artist to the buyer. ) In the United States, only California has such a statutory provision. The right is found in Article 14ter of the Berne Convention, but it is reciprocal, meaning that it is not subject to national treatment. In short, country x will give country y's artists royalty proceeds from resales in country x only if country y reciprocates for resales of works of country x's artists in country y. (As a result of the Phil Collins decision, it was likely that within the European Union, national treatment was required). Given there is no U.S. federal right, U.S. artists are out of luck.

The European Union, in 2001, issued a harmonization directive, EU Directive , but opposition of British art dealers caused a delay of implementation in that country until 2006. Draft implementing regulations have been recently issued. British Patent Office Draft Regulations. In 1991, as a Policy Planning Advisor to the Register of Copyrights, I was assigned the task of being the drafter of a report to Congress on the subject, and pulled the tough duty of traveling to Paris and Munich to interview French and German artists and dealers groups as well as experts. These two countries have considerable experience with droitde suite. The wine and beer were excellent. The Register of Copyrights and I also held a hearing in New York City and I held one in San Francisco.

I pretty much had finished my research, but before I could start on a draft report, I walked across the street and joined the House IP subcommittee. An attorney in the General Counsel's Office, Elliot Alderman, was then assigned the task, but limited to desk work in the Copyright Office's slightly Krushchev-looking building on Capitol Hill. His take on the issue (I believe reflected in the report that was subsequently issued - not in electronic form unfortunately), was quite different than my initial views: his and the report's were quite negative. (His unadorned views can be read here: Elliot Alderman 1999 article).

My initial view was favorable toward the U.S. adopting the right. I say "initial" because they have changed over time and have not really settled. My first look at it was, I fear, based simply on the idea that unlike book authors and music composers who benefit financially from the reproduction right (and in the latter case also the performance right), visual artists benefit principally through the sale of the physical object. Very much like the impetus for the second bite at the apple theory of renewal rights, advocates of droitde suite believe that visual artists are at a decided disadvantage in initial leverage for pricing the sale of the object and that the true market value can't be known at that time.

Distributors, especially gallery owners, point out that through their marketing effort they play an important role in the fame artists achieve, and quite significantly I believe, they also note that if a collector makes a killing on one painting, all of the artist's unsold as well as future paintings automatically go up in value and thus the artist will be able to "cash in." (This takes away for such works the "can't know the value" argument).

There are also a host of very serious administration issues and some of fairness. The fairness issue is triggered by the fact that if the value of a painting declines on resale, the artist doesn't have to pony up a share of the loss. Droitde suite only has an upside for artists, while for distributors there is the reality that they will, sometimes, lose money. Administrative problems are legion: what types of works to include, are there minimum caps, ceilings, deductions for commission fees, does it cover private sales, only public sales at auctions, what about sales through intermediaries? And, most uncomfortably, does it only help rich artists anyway?

Friday, June 10, 2005

The question of when something is a derivative work should not be complicated, although some have made it so. Let's start with the statutory definition, in Section 101:

A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work.”

Note that a sound recording is a derivative work. This doesn't mean only a revision to an earlier sound recording (although that too is a derivative work), it also means the original sound recording. That's because the sound recording is deemed to be based on the musical composition whose performance is embodied in the sound recording (and phonorecord when fixed).

The question of derivative sound recordings has arisen in connection with the Section 115 compulsory license. That license is available when "phonorecords of a nondramatic musical work" are distributed. There are presently a number of different formats of Super Audio in the market place, including SACD and DVD. (The most recent platform, DualDisc, is not Super Audio but has, as its name indicates two layers, one audio and one audiovisual). There are older discs that will play only on an SACD player or only on a DVD player, as well as "Hybrid" or DualDiscs that will play on an SACD or CD player or a universal player. (I have the last of these types of players).

Issues for compulsory licensing are presented because there is more than one layer on a single Super Audio disc. Two principal questions are: (1) whether some of these layers are merely "transfers" that do not represent new authorship, or, whether some, such as remixes for 5.1 channel surround sound, are derivative works for which a separate compulsory license fee is required unless (2) even though there are as many as three layers on a given disc (all perhaps with different derivative versions), the disc is considered to be one "phonorecord" within the meaning of Section 115, and thus one payment only is required notwithstanding that if the layers were separately released they would require three payments.

The issue was discussed at a U.S. House IP subcommittee hearing in March 2004. There was also a March 2005 hearing before the subcommittee on larger 115 issues.

Thursday, June 09, 2005

Yes, termination of transfers matter quite a bit. But figuring out how they work and why they are in the statute can be head-scratching. Termination of transfers are the result, ultimately, of two factors. First, the Supreme Court's belief that it could make better policy than Congress; and second, Congress's decision in the 1976 Act to switch to a term of protection measured by life of the author, rather than, as under the 1909 Act, from the date of first publication.

The 1909 Act provided for two terms, an original term of 28 years, and a renewal term also of 28 years but dependent upon a proper renewal in the final year of the original term. The purpose of this arrangement was (hard as it is to believe) to give the author a second bite at the apple: because it was believed difficult to calculate the market value of a work at its inception, it would be hard to calculate what an assignment of the renewal term was worth. Congress therefore considered the renewal term to be an opportunity for the author or his or her heirs to renegotiate the terms of an assignment made during the original term. But that plan worked only if the author was not permitted, during the original term, to also convey the renewal term. If the author could convey the renewal term along with the original term, the plan failed.

In Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643 (1943), this question was squarely presented. In a 6-3 opinion by Justice Frankfurter, the Court held the author could assign in futuro the renewal right. For those who have read the catty comments about legislative history made by Frankfurter previously as law professor, his phrasing of the issue will come as a surprise. It will also come as a surprise to those who believe that the Scaliantextualist approach to statutory construction is and always has been mainstream. Here's how Frankfurter posed the issue presented:

"Plainly, there is only one question before us -- does the Copyright Act nullify an agreement by an author, made during the original copyright term, to assign his renewal? The explicit words of the statute give the author an unqualified right to renew the copyright. No limitations are placed upon the assignability of his interest in the renewal. If we look only to what the Act says, there can be no doubt as to the answer. But each of the parties finds support for its conclusion in the historical background of copyright legislation, and to that we must turn to discover whether Congress meant more than it said."

After traversing the history of U.S. copyright acts and legislative history, Frankfurter got to the real point, and that point was his preferred policy:

"If an author cannot make an effective assignment of his renewal, it may be worthless to him when he is most in need. Nobody would pay an author for something he cannot sell. We cannot draw a principle of law from the familiar stories of garret-poverty of some men of literary genius. Even if we could do so, we cannot say that such men would regard with favor a rule of law preventing them from realizing on their assets when they are most in need of funds. Nor can we be unmindful of the fact that authors have themselves devised means of safeguarding their interests. We do not have such assured knowledge about authorship, and particularly about song writing, or the psychology of gifted writers and composers, as to justify us as judges in importing into Congressional legislation a denial to authors of the freedom to dispose of their property possessed by others. While authors may have habits making for intermittent want, they may have no less a spirit of independence which would resent treatment of them as wards under guardianship of the law."

Whether one agrees with this or not (and great judges like Judge Pierre Leval do agree with the policy expressed by Frankfurter), the Court should not have ended up where it did, since it conceded the statute was plain and plainly to the contrary. In the 1976 Act, Congress took care of this by making termination of transfers inalienable. There are of course two of them. The first, in Section 304, deals with works protected under the 1909 Act, and gives the right to terminate the extra 19 years added in 1976 (28+28+19). An extra opportunity to terminate was added for the 20 years tacked on by the Sonny Bono Act (28+28+19+20) in case the author missed the deadline for the 19 year termination. (I take credit for this third bite).

The second termination, in Section 203, deals with terminations of transfers made after January 1, 1978 and thus this right includes 1909 Act works too if the transfer was made after 1/1/78. Some works may thus have both 304 and 203 termination rights. Or, a work created from 1909 to 1977 may not have a Section 304 termination right at all if it was unpublished and protected federally only by virtue of Section 303.

Importantly, there is no termination of transfer right if the work was made for hire. Terminations could have been made automatic. This would have greatly simplified things. But in the rough-and-tumble of lobbying, this didn't happen, and the current Rube Goldberg provisions are a result. Whether the very low termination right (perhaps 4% on average, but much higher for musical works) is the result of this complexity (and if so it mirrors renewal) or is the result of a lack of a desire to terminate is, no doubt, a highly partisan affair.

Wednesday, June 08, 2005

A comment to yesterday's posting raised the issue of protection for clothing. This was an issue that arose when I was a Policy Planning Advisor to the Register of Copyrights in the context of costumes. Eventually, the Office issued a Policy Decision, 56 Federal Register 56530 (Nov. 5, 1991) which took the position that full body costumes were useful articles. This is what I call the "Scottish Kilt" theory of costume utility. The design of useful articles must meet the separability test, in addition to being original. If the pictorial graphic, and sculptural work is not the design of a useful article, it need only meet the originality standard. (What the proper test(s) are for separability is a separate and extraordinarily complicated, controversial topic well beyond any blog).

Some courts have followed the Office's view, like Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211 (9th Cir. 1997). Recently, in Boyd's Collection, Ltd. v. Bearington Collection, Inc., 360 F. Supp.2d 655, 661 (M.D. Pa. 2005), the court held that clothing for a Teddy Bear was not a useful article, because "it replicates the form but not the function of clothing on a person."

My view, which is a distinctly minority view (and maybe is solely my view), is that clothes are not useful articles within the meaning of the statute. Rugs, for example, may provide warmth against a cold winter floor, but as with other two-dimensional works applied to useful articles, the pictorial or graphical elements placed on the rug or in the rug do not function as the design of a useful article, and thus the separability test is not applied. In a Second Circuit case, Langman Fabrics v. Graf Californiawear, Inc., 160 f.3d 106 (2d Cir. 1998), amended 169 F.3d 782 (2d Cir. 1998), a case involving the notice requirement, the court sided with me and against the Office and held that "the question is not whether the design is useful, but whether the fabric on which the design is printed is useful." This properly distinguishes between the intellectual property and the copy in which it is embodied.

Clearly, the non-design elements of a rug (the raw fabric) are useful, but the design itself isn't. The design is only the design of the rug in a colloquial, non-legal sense. The same is true of clothing. The separability test should only be applied to the design of three-dimensional works. Clothing design is usually two dimensional, but even if three-dimensional I do not see how it serves a useful purpose within the meaning of the Act. Instead, its purpose is merely to portray its appearance, and thus it falls outside the definition of a useful article.

I expect my friends in the Copyright Office will disagree and I look forward to any comments they may have.

Tuesday, June 07, 2005

In the heady days of Berne adherence in 1988, the air was full of anti-formality sentiment. Maybe, the sentiment went, U.S. law was finally moving toward the formality-free approach taken on the Continent. Maybe, we would at long last be able to hold our heads high whilst walking along the Seine to attend yet another profound WIPO symposium. Maybe, we could at long last engage in all that fancy-schmanzy natural rights theorizing so beloved by Europeans, without worrying that behind our backs we were being laughed at for our colonial attachment to formalities.

There was no basis for such optimism. The 1990 VARA has a numbering and marking requirement, a true non sequitur for a moral rights provision. In 1992, the Copyright Office and book publishers fought efforts to repeal Section 412 (which conditions an award of attorneys fees and statutory damages on a pre-infringement registration) as if their very lives were at stake. The 1998 DMCA's copyright management information provisions have resurrected mandatory notice provisions, but with a reverse twist: it is users who have to worry, not copyright owners.

Formalities have always been an important part of U.S. copyright law and seem destined to remain so. The policy debates on them are well-known, and I don't want to take sides. Instead, since they exist, I want to point out one consequence: the importance of having the right kind of registration for "United States" works as a jurisdictional prerequisite to the bringing of an infringement action, a requirement expressed in Section 411(a).

Contrary to Nimmer's blatant misreading of the statute (he asserts one need only have sent in the check, the deposit copy, and the completed application), one must have either the issued registration or a rejection in hand. Failure to do so results in the court not having subject matter jurisdiction and thus having to dismiss the matter (without prejudice).

Claims of infringement in derivative works pose special problems. There are two scenarios, but each share this common fact: a work has gone through a number of iterations, but there is only one registration and plaintiff seeks to use that one registration to satisfy Section 411(a).

In scenario one, the registration is for the first, original version. No subsequent registration has been made for later versions. I call this a "forward-looking" registration. In scenario two, the registration is for the most recent version. No registrations have been obtained for earlier versions. I call this a "backward-looking" registration.

The reasoning behind the distinction is fairly straightforward: with backward-looking registrations, the material in which copyright is claimed has been examined by the Copyright Office and is on public file. With forward-looking registrations, the Copyright Office has not examined the claim and the material is not on public file.

Monday, June 06, 2005

In 2004, a panel of the Sixth Circuit issued an opinion in Bridgeport Music, Inc. v. Dimension Films, 383 F.3d 390 (6th Cir. 2004). On December 20, 2004, the full court of appeals denied a petition for rehearing en banc, but a panel rehearing was granted limited to discrete issues raised in Section II of the original panel opinion, 401 F.3d 647 (6th Cir. 2004)(perhaps the quid pro quo for the rehearing en banc being denied).

On Friday, June 3, 2005, the panel issued a new opinion in which it "adhere[d] to our conclusions and amend the opinion to further clarify our reasoning." 2005 U.S. App. LEXIS 10140 (6th Cir. June 3, 2005).

The original panel opinion, as well as Friday's, are controversial, for at least two reasons. First, the panel adopts a different approach to infringement of a musical composition embodied in a phonorecord than for infringement of the sound recording embodied in that same phonorecord; second, the difference lies in the lack of any requirement of even a deminimis taking for sound recordings. (While finding that a sampling of three notes was infringement, the court demurred on whether sampling of one note would be. I fail to see any basis in the court's reasoning for excusing the taking of one note when three is infringement).

While the court stated that its analysis began "and largely ended" with the language of Section 114(a) of the Act, there was no language cited to that supports the court's view that Section 114 abolished the previous substantial similarity test employed by the courts for all other subject matter. It is true, as the court stated that a bright line test, one which says "Get a license or do not sample" provides "ease of enforcement." But that is equally true of all other subject matter: you want to parody a work, get a license; you want to write a book review, get a license; you want to quote three words from a poem in a movie, get a license.

The court believed that samplers don't take accidentally, but that is true of all my examples, and the more than deminimis copying requirement for substantial similarity has never been based on unconsicious copying. Nor is there anything special about copying by sampling versus copying by incorporating three notes from a musical composition into another musical composition or into a phonorecord. The court also believed that even three sampled notes have value. Ditto other copying, but whether the portion copied has value has never been the test for infringement (although it is relevant at the much later fair use stage).

Bridgeport is policy making wrapped up in a truncated view of law and economics, shorn of analysis of all the public interest factors and harm to derivative creators that nuanced exponents, such as Judge Posner, engage in. It is also bad for record companies on two fronts (and I think it important to note that this is not an RIAA suit). First, it adds fuel to the fire for those who believe record companies are engaged in an effort to prohibit any and all unauthorized copying (I think this is not an accurate view, by the way). Second, it harms record companies by forcing them (at least in the 6th Circuit) to engage in a retroactive process of determining who they may have to pay off for past, unpaid samples and well as possibly requiring them to institute extremely restrictive future policies.

But in the end, it is creators of new sound recordings who build, transformatively on the works of predecessors who will suffer the most, and thereby all of us. Hopefully cert. will be granted, and the 6th Circuit reversed.

Thursday, June 02, 2005

In yesterday's posting, I detailed the vote switches in the Sony case and how Justice Blackmun gave up his majority by refusing to make further changes to his draft opinion. He stated: "Five votes are not that important to me when I feel that proper legal principles are involved." As I pointed out, the result of his refusal to budge was a majority opinion (by Justice Stevens) that was far worse, from Blackmun's perspective, than any changes Blackmun had been asked to make. I questioned whether Blackmun's standing on principle was the right decision.

The answer to whether standing on principle (at least his principles) was the right thing for Blackmun to do raises other issues: was it the right thing to do for the rest of us? Was it even the right thing to do for Blackmun himself, meaning, did he better advance his own policies by refusing to compromise and thus having to express his views in a dissent rather than make law through a majority opinion? Would he have better advanced his principles by avoiding a majority opinion that was a clear anathema to him, albeit at the price of accommodating some views he disagreed with?

Such dilemmas are commonplace and intrinsically matters of subjective judgment, but when they are played out by public servants at the highest levels of government, such as the Supreme Court, Congress, and the Executive Branch, might we not inquire into whether public servants should transcend their own desire to stand firm, sacrificing a bit for the greater common good, at least as they perceive the greater common good?

Those making such choices must perceive a greater public good is in play, otherwise there wouldn't be principles of such importance involved that it is worth standing firm even though you are fully aware that by doing so, your favored course of action will lose out. I do not intend to make my own evaluation of the merits of the substantive matters at issue in such decisions (e.g., whether Sony should have been held contributorily liable or whether the time-shifting involved there was or wasn't fair use), but I am interested in how public officials act when at the precipice.

I had a first hand experience with this in 1994, while copyright counsel to the House IP subcommittee. In 1992, I explored with our chief counsel, Hayden Gregory, the idea of finally extending a public performance right to sound recordings. After many meetings with various parties, we decided to present the idea to our boss, Chairman William Hughes. Mr. Hughes agreed that in light of emerging digital technologies, the time was ripe for exploring the issue. We held an oversight hearing and then many, many more meetings, including industry roundtables. Mr. Hughes introduced a bill granting a "pure" performance right bill: no exceptions. This was, of course, just a starting point and at an extreme end of the pole, but it made a point: that he believed a public performance right for sound recordings was as valuable and necessary as all the other Section 106 rights.

The hard work then took place: getting cosponsors, and taking care of objections. Musical publishers and performing rights societies were an initial obstacle. The bill almost died over demands made by music publishers. We then faced the biggest obstacle of all: broadcasters. Broadcasters were the biggest obstacle because of their crushing lobbying strength: they could kill any bill.

Broadcasters demanded a complete exemption. We attempted to negotiate for very generous and then extremely generous exemptions. To no avail. For the broadcasters, it was their way or the highway. And they had to muscle to insist on that approach. (It is, by the way, a telling condemnation of conspiracy theorists of the legislative process that the broadcasters' chief point person with us on this was my best friend, Tom Olson of Wilmer Cutler & Pickering, and a former Senate IP subcommittee staffer. Despite our closeness and enduring affection for each other, and my utter frustration with broadcasters, neither of us budged, nor was our friendship affected in the slightest).

When it became clear that the broadcasters wouldn't budge, Hayden and I recommended that Mr. Hughes push the bill forward anyway (that is, cave in to their demands), despite our personal objection to such an exemption as well as to many previous compromises in what had become a very ugly bill. By this time, Mr. Hughes had announced his retirement at the end of the session, and it was our belief - and his - that if we didn't get this bill passed, a new one would be introduced in 1995 and that bill would, from our perspective, represent, ultimately, much worse policy. A last ditch meeting was held with Jay Berman, then head of RIAA, so that Jay could hear directly from Mr. Hughes the basis for Mr. Hughes' refusal to move the legislation (and hopefully convince Mr. Hughes to change his mind)

Mr. Hughes refused purely on principle; he objected to a complete broadcaster exemption, and insisted that he would never put his name on a bill that gave them one. And as chair of the subcommittee no bill would go forward without his name on it. To Mr. Hughes, the exemption was not deserved and was terrible policy. He was well aware of the consequences of his refusal: a much worse bill next year, and from his perspective (and ours), that is exactly what happened. In other words, Mr. Hughes had a Justice Blackmun Sony moment.

It is easy for me to say that Justice Blackmun and Mr. Hughes should have acted differently, but it wasn't my name that was going on the opinion or on the bill, and can it be said clearly that their conception of the appropriate role of public servants is not to facilitate bad policy?

Wednesday, June 01, 2005

Linda Greenhouse recently published a very well-received book, "Becoming Justice Blackmun: Harry Blackmun's Supreme Court Journey." There is no mention of the Sony case in it, or copyright for that matter. But Sony is emblematic of one aspect (and maybe more) of Justice Blackmun's personality. As Ms. Greenhouse put it on page 121: "[I]t was typical of Blackmun to hold fast to territory he had staked out and to become deeply invested in its defense." This was certainly true in Sony, where Blackmun was assigned to write the majority opinion affirming, but he ended up having to convert his opinion into a dissent. He was outmaneuvered by Justice Stevens and was his own worst enemy in losing a fragile, but sustainable 6-3 majority.

Justice Blackmun's first mistake was in the cert. vote. Those voting to grant certiorari were Blackmun, Burger, O'Connor, and Stevens, the bare four needed. Had Justice Blackmun voted against cert., it would have been denied, and the Ninth Circuit opinion affirmed as he wanted. (Congress then would have stepped in and dealt with the problem).

Things didn't improve from there. Justice Stevens began his politicking to change the conference vote (which occurred on January 21, 1982) in a January 24th letter to Justice Blackmun (other than personal missives, correspondence is circulated to all the Justices regardless of the addressee). One sentence in particular should be highlighted, and it is one that should give all Supreme Court advocates (and their clients) pause: "Because the point that most strongly supports a reversal was not adequately developed during the argument, and because I expect to emphasize it in dissent, it occurs to me that it may be helpful to you in the preparation of your opinion -- and conceivably might persuade one of you adherents to reconsider the matter before positions become absolutely firm - for me to put the basic outline of my argument on paper."

From there on out, as adamantly as Justice Blackmun "held fast to territory," Justice Stevens skillfully wooed over a majority by being flexible. For example, in a February 3, 1983 letter to Justice Blackmun, Justice Powell wrote that even though he had voted with Blackmun at the conference, Stevens' single copy fair use argument "was new to me ... and I must say that it makes the question more difficult for me."

Things were quiet for almost 6 months, until the middle of June 1983 when the first draft opinions were circulated. On June 16, one Justice wrote to Blackmun expressing concern about his draft's rejection of the District Court's view that Sony had suffered no harm and about his criticism of the District Court for requiring Sony to prove it had suffered actual harm. This Justice was willing to affirm the finding of no fair use, but wanted the District Court's findings on harm upheld as not clearly erroneous and asked Blackmun to modify his opinion along those lines. Blackmun quickly responded by offering to "make clear that the plaintiff's burden of production is a substantial one, and that unsubstantiated speculation is not enough." A remand on harm was thrown out as a possibility.

Justice White then sought common ground with a middle position that Justice Brennan was pursuing, and Justice Stevens quickly leapt on the opportunity to try and pull them into his camp. The Justice who had written to Blackmun about harm responded to him that his efforts to address the concerns expressed were appreciated, but that a remand didn't seem fruitful, although the possibility wasn't ruled out. Application of the staple article of commerce doctrine was then offered as a way out by this Justice. Changes were then made in a third Blackmun draft, but the issue of harm and burden of proof returned, and the same Justice who had raised that issue wrote again to Blackmun (noting by the way, clearly apropos Grokster, that there may be liability under either inducement or material contribution theories), and emphasizing the "capable" of substantial non-infringing use standard for the staple article of commerce doctrine. If changes all those lines were made, this Justice would stay with Blackmun, and his 6-3 majority would hold. Brennan sent a note to Blackmun encouraging him to make the changes.

Blackmun went back to the drawing board, but in a June 21, 1983 letter expressed a belief that the burden of persuasion on harm should be on the prospective user and expressing a reluctance to adopt the patent law staple article of commerce doctrine "lock, stock, and barrel" into copyright law. This didn't bode well for keeping skittish Justices with him, and Blackmun indeed quickly lost Justice Brennan. On June 28, he lost the final Justice in his majority with this fateful note to that Justice, quoted in full:

"I have endeavored over the past several days to accommodate your many concerns. My letter of June 23 to you represents the limit of what I am willing to do. Five votes are not that important to me when I feel that proper legal principles are involved. It therefore looks as though you and I are in substantial disagreement. The case will have to go its own way by a different route from the one I proposed. "

And so it did. There was a reargument, but it was for show only because given the vote switch there was no time to get an opinion out before the term ended in two weeks . Blackmun did hold fast to the territory he had staked out, but the result was a majority opinion by Justice Stevens that was far, far worse than the accommodations he refused to make. But was Justice Blackmun "wrong" to stand on his principles? That question is the subject of Thursday's blog.

About Me

This is a personal blog, not a Google blog. It is about my book Moral Panics and the Copyright Wars, published by Oxford University Press. Please don't attribute anything in the blog or the book to Google, which employs me.